Ex Parte Norin et al

Patent Trial and Appeal Board

Feb 4, 2013

11595416 (P.T.A.B. Feb. 4, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/595,416 11/10/2006 John L. Norin PD-206022 9093
20991 7590 02/05/2013
THE DIRECTV GROUP, INC.
PATENT DOCKET ADMINISTRATION
CA / LA1 / A109
2230 E. IMPERIAL HIGHWAY
EL SEGUNDO, CA 90245
EXAMINER
ISSING, GREGORY C
ART UNIT PAPER NUMBER
3646
MAIL DATE DELIVERY MODE
02/05/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOHN L. NORIN, and SEAN S. LEE
____________________

Appeal 2011-000025
Application 11/595,416
Technology Center 3600
____________________

Before: MICHAEL C. ASTORINO, PATRICK R. SCANLON, and
BARRY L. GROSSMAN, Administrative Patent Judges.

GROSSMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Final Rejection
mailed December 22, 2009 rejecting claims 1-30. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

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The Claimed Subject Matter
The claimed subject matter relate to systems and methods which
include a mobile receiving device, where the mobile receiving device takes
into consideration the location of the device when content, such as
advertising, is played back. Spec. [0006], [0009], [0010]. Claims 1, 20, 24
and 28 are independent claims. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A method of operating a mobile
broadcasting system comprising:
determining a location of a mobile receiving
device;
broadcasting a communication signal having
a marker and a category therein;
broadcasting location-specific content
having instructions to the mobile receiving device;
generating a display with the mobile
receiving device corresponding to the
communication signal;
when the marker is reached, the location-
specific content is available, and the category
corresponds to the instructions, changing the
display with the mobile receiving device to display
the location-specific content in response to the
marker and the location; and
when the marker is reached, and no location-
specific content is available or the category does
not correspond to the instructions, displaying
broadcast advertising from the communication
signal.

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References
The Examiner relied upon the following prior art references:
Nonomura US 2002/0060747 A1 May, 23, 2002
Lowthert US 2002/0100043 A1 July, 25, 2002
Whitsey-Anderson US 6,968,206 B1 Nov. 22, 2005
Yoji Moishita, et al,, Broadcasting Systems Using Stratospheric Platforms
and Their Preliminary Experiments, IEEE 5th International Symposium on
Wireless Personal Multimedia Communications, Vol. 2, pp. 454-458 (2002).
Rejections
Claims 1 – 30 are pending in the application. App. Br. 2.1 Claims 1 –
30 stand finally rejected.2 However, Appellants seek our review only of the
following rejections involving claims 1-29:
1. Claims 1-5, 8-12, 14-17, 19-25 and 27-29 rejected under 35 U.S.C.
§ 103(a) over Nonomura and Lowthert;
2. Claims 6, 18 and 26 rejected under 35 U.S.C. § 103(a) over
Nonomura, Lowthert, and Moishita; and
3. Claims 7 and 13 rejected under 35 U.S.C. § 103(a) over
Nonomura, Lowthert, and Whitsey-Anderson.
The rejection of claim 30 is not before us for review. Reply Br. 2.3

1 Citations to “App. Br. ___” are to the indicated page of the Appeal Brief
filed on April 19, 2010.
2 Final Rejection mailed December 22, 2009. See also the Examiner’s
Answer, page 3.
3 Citations to “Reply Br. ___” are to the indicated page of the Reply Brief
filed on September 1, 2010.

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ANALYSIS
Claims 1-5, 8-12, 14-17, 19-25 and 27-29
Appellants argue many of the claims as a group.
Claim 1 Group – Appellants state that the following claims stand or
fall with the outcome of our review of independent claim 1: claims 2, 3, 7, 8,
9, 10, 11, 13, 14, 15, 16, 17, and 19.4
Claim 20 Group – Appellants state that the following claims stand or
fall with the outcome of our review of independent claim 20: claims 21, 22,
and 23.5
Claim 24 Group – Appellants state that the following claims stand or
fall with outcome of our review of independent claim 24: claims 25 and 27.6
The Appellants separately argue, and we therefore separately address,
the rejections of claims 4, 5, 6, 18, 26, 28, and 29.
Where Appellants do not present separate arguments for claims, the
claims without separate argument stand or fall with the argued claims. See
37 C.F.R. § 41.37(c)(1)(vii) (2011).
Claim 1 Group
We start with an analysis of independent claim 1. The Examiner
found that Nonomura discloses a broadcasting system for broadcasting
content, including advertising information, wherein local advertising
information may be broadcast in place of a commercial appended to the

4 Appellants state this grouping in their Appeal Brief, pages 10 – 12; and in
their Reply Brief, pages 3 – 4.
5 Appellants state this grouping in their Appeal Brief, page 13; and in their
Reply Brief, page 3.
6 Appellants state this grouping in their Appeal Brief, page 13; and in their
Reply Brief, page 3.

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broadcasting content when the local advertising information corresponds to
an area. Ans. 4. As such, regarding claim 1, the Examiner found that
Nonomura discloses the method substantially as claimed, except for the step
of broadcasting the location-specific content having instructions. Ans. 6.
The Examiner also found that Lowthert discloses the inclusion of
instructions in advertising information wherein the instructions may impose
limitations upon the type, rating, source, content or other aspect. Id.
The Examiner concluded that it would have been obvious to one
having ordinary skill in the relevant technology to modify Nonomura by
incorporating the teachings of Lowthert of including instructions with the
location-specific advertising content. Id. The combined references would
then include receiving a broadcast including program content, markers for ad
placements, and information regarding the type of program as well as
broadcasting location specific advertisement information having instructions
therein for permitting or prohibiting different types of advertisements on the
basis of the program content. Ans. 9 – 10.
The Examiner’s rationale for the proposed combination of Nonomura
and Lowthert is that “the combination of references teaches receiving a
broadcast including program content, markers for ad placements, and
information regarding the type of program as well as broadcasting location
specific advertisement information having instructions therein for permitting
or prohibiting different types of advertisements on the basis of the program
content.” Id.. The Examiner also reasoned that the combined references
would yield a predictable result of providing suitable advertising content
based on the type of programming information being displayed. Ans. 7.
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We conclude that the Examiner has established a prima facie case of
the reasons why Appellants are not entitled to a patent based on the claims
pending in this case. Thus, this shifts the burden of going forward to the
Appellants who must produce evidence and/or argument rebutting the case
of unpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Appellants agree that Nonomura is capable of controlling the insertion
of advertisements. Reply Br. 3. Appellants also acknowledge that
Nonomura discloses that instructions are broadcasted in the “general signal.”
Reply Br. 4. Regarding claim 1, the only deficiency in the Nonomura
reference mentioned by Appellants is “the lack of a category and
instructions.” App. Br. 10.
Appellants admit that Lowthert is “directed to the receiver device
being able to insert or not insert advertising based on some criteria,” but
allege that the criteria are not “instructions that are carried with the location-
specific content,” as called for in claim 1. Id.
Appellants argue that claim 1 specifically recites that “instructions”
are provided in the “location-specific content”. Id. Appellants assert that
Lowthert inserts an ad at an “ad entry” which is contained in an “info
segment of a program.” Id. Appellants conclude that “it is clear” that the
logic used for the “ad insertion” in Lowthert, that is, the “instructions” called
for in claim 1, is contained within the program itself in Lowthert rather than
in the location-specific content called for by claim 1. Id. Appellants also
argue that the “content to be inserted includes the instructions rather than the
identifiers provided for in paragraph 35 of the Lowthert reference.” Reply
Br. 2.
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We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon giving claims “their broadest
reasonable interpretation consistent with the specification” and “in light of
the specification as it would be interpreted by one of ordinary skill in the
art.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(citations omitted). It is the appellants' burden to precisely define the
invention, not the PTO's. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir.
1997).
Appellants’ Specification provides no specific meaning for the term
“instruction.” If the specification does not assign or suggest a particular
definition to a claim term, it is appropriate to consult a general dictionary
definition of the word for guidance in determining the ordinary and
customary meaning of the claim term as viewed by a person of ordinary skill
in the art. Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir.
2010). In the context of the relevant technology and the specification, the
broadest reasonable interpretation consistent with the specification of the
term “instruction” is a direction “to perform a particular operation. An
instruction can also contain data to be used in the operation.”7
Appellants have not pointed to anything in their Specification that
distinguishes the term “instruction” as it is used in the claims from the
Examiner’s findings concerning the disclosure in Lowthert. The only
disclosure in Appellants’ Specification that sheds light on the term
“instruction” in the claims is a single example of an “instruction.” [Spec.
0039]. The example provided states that an “instruction” is appended to an

7 The American Heritage® Science Dictionary, © 2005 by Houghton Mifflin
Company.
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“advertising signal” to be evaluated by the receiving device. Id. Claim 1
refers only to a “broadcasting signal.” The example further states that the
“instruction” would “state that this advertisement should only be displayed if
the user is located within a certain geographic area described in location
information 232 and if the user is tuned to a sports channel.” Id.
Appellants have not pointed to any evidence or provided any
persuasive reasoning to establish that the Examiner erred in his findings and
conclusions regarding the applied references. Specifically, Appellants have
not pointed to any evidence or provided persuasive reasoning to support
their allegation that the “instructions” in Lowthert, even if within the
“program” as alleged, are substantively different from the location-specific
content called for by claim 1. Appellants admit that Lowthert discloses a
receiver device being able to insert or not insert advertising based on some
criteria but assert, without citation of evidence or persuasive reasoning, that
the criteria are not “instructions that are carried with the location-specific
content,” as called for in claim 1.
Claim 12 depends from claim 1. Appellants have not included claim
12 in their Claim 1 Group. However, Appellants also have not separately
argued any alleged error in the Examiner’s rejection of claim 12. Appellants
have not pointed to any evidence or provided any persuasive reasoning
regarding the rejection of claim 12. Where Appellants do not present
separate arguments for claims, the claims without separate argument stand or
fall with the argued claims. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claim
12 thus falls with claim 1.
Accordingly, we affirm the rejection of claim 1. Claims 2, 3, 7, 8, 9,
10, 11, 12, 13, 14, 15, 16, 17, and 19 fall with claim 1.
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Claims 4 and 5
Claim 4 depends from claim 1. Claim 5 depends from claim 4.
Appellants argue that the Examiner “fails to point to a teaching that the
location-specific information is communicated or broadcasted from a space-
based source” as called for in claim 4. App. Br. 11. An example of a space-
based source is a satellite, as called for in claim 5. Appellants concede that
claim 5 stands or falls with claim 4. Id. However, in the Reply Brief,
Appellants admit that paragraph 2 of the Nonomura specification discloses a
space-based source, specifically a satellite, as found by the Examiner.8
Reply Br. 3. Their only remaining argument regarding claim 4 is that
“[t]here is no teaching or suggestion that the location-specific content has
instructions to the mobile receiving device.” Id. However, the deficiencies
of this argument have been discussed above with respect to our analysis of
claim 1.
Accordingly, we affirm the rejection of claims 4 and 5.
Claims 6, 18, and 26
Claims 6 and 18 depend from independent claim 1. Claim 26 depends
from independent claim 24. These three claims all call for broadcasting
“from a stratospheric platform.” Appellants admit that stratospheric
platforms have been suggested for digital broadcasting, but argue that what
is not taught or suggested is broadcasting location-specific information from
a stratospheric platform. Reply Br. 4. The Examiner found that primary
references disclosed the use of satellite or terrestrial broadcasting stations to
provide advertising information on a digital broadcasting wave to a mobile

8 Nonomura discloses “[a] digital broadcasting receiving device for
receiving digital broadcasting using a satellite or a ground wave.”
Nonomura [0002]; Ans. 10.
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receiving device wherein the advertising information may be location
specific. Ans. 15. The Examiner also found that Moishita suggests the use
of stratospheric platforms for providing digital broadcasting. Id. The
Examiner concluded that it would have been obvious to one having ordinary
skill in the art at the time the invention was made to modify Nonomura in
light of the teachings of Moshita by using a stratospheric platform to
broadcast the location specific content associated with the
advertising/commercial information. Ans. 7-8. The rationale provided by
the Examiner for incorporating a stratospheric platform is that it has the
advantages of wider area of line of sight than terrestrial systems and smaller
propagation losses and distortions due to shorter propagation distances than
satellite systems. Ans. 15. Appellants have not pointed to any evidence or
provided any persuasive reasoning to establish that the Examiner erred in his
findings and conclusions regarding the applied references. Our analysis of
claim 1 above dealt with Appellants’ arguments regarding broadcasting
location-specific information.
Accordingly, we affirm the rejection of claims 6, 18, and 26.9
Claim 20 Group
The Claim 20 Group includes claims 20-23. Appellants state that
independent claim 20 is similar to claim 1 in many aspects but includes
specifics to the system being a satellite-based system. App. Br. 12.
Appellants repeat their arguments made against the rejection of claim 1 that
there is no teaching or suggestion in the applied references for determining
when the location is within an area and when the category corresponds with

9 Claim 26 was included in the rejection grouping of claims 6 and 18 and we
have also included it here notwithstanding the fact that it depends from
claim 24. See our analysis of claim 24 infra.
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the instructions. Id. at 12-13. For the same reasons discussed above with
respect to the rejection of claim 1 the Appellants’ argument is not
persuasive.
Accordingly, we affirm the rejection of claims 20-23.
Claim 24 Group
Appellants state that the reasons to reverse the Examiner's rejection of
the claims in the Claim 24 Group, claims 24, 25, and 27, are “the same
reasons set forth above with respect to claim 1.” App. Br. 13. For the same
reasons discussed above with respect to the rejection of claim 1 the
Appellants’ argument is not persuasive.
Accordingly, we affirm the rejection of claims 24, 25, and 27.
Claims 28 and 29
Independent claim 28 is directed to a receiver. The Examiner found
that the receiver of claim 28 comprises two elements - a location module and
a controller, each of which is disclosed by the combined prior art references.
Ans. 5-6, 13. The Examiner concluded that it would have been obvious to a
person of ordinary skill in the relevant technology to provide the specific
operations of the controller called for in claim 28. Id. at 14. In particular,
the Examiner found that Nonomura discloses a GPS receiving circuit 12 and
a CPU 11 in the portable receiving device 30, and Lowthert discloses a
controller 40 in the portable receiver 10. Id. at 13-14. The Examiner also
found that the controller of Nonomura clearly is capable of controlling the
insertion of location-specific advertisements/commercials for display on the
basis of a plurality of received/inputted information. Id. at 14.
Regarding independent claim 28, Appellants repeat their argument
that the applied references do not disclose or suggest the location-specific
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content with location information and instructions received by the controller.
Appellants assert that Nonomura teaches that instructions are broadcasted in
the general signal not in or with an advertisement. Reply Br. 4. For the
same reasons discussed above with respect to the rejection of claim 1 the
Appellants’ argument is not persuasive.
Claim 29 depends from claim 28. Appellants argue generally that the
applied references fail to disclose the limitations called for in claim 29 but
provides no specific substantive argument as required by Rule
41.37(c)(1)(vii) to support their position and rebut the finding of the
Examiner (Ans. 14). Thus, we consider any arguments against the rejection
of claim 29 waived. See In re Lovin, 652 F.3d 1349, 1356-1357 (Fed. Cir.
2011).
Accordingly, we affirm the rejection of claim 28 and 29.
Claim 30
Appellants do not seek review of the rejection of claim 30. Reply Br.
2. An appellant’s brief must be responsive to every ground of rejection
stated by the examiner that the appellant is presenting for review in the
appeal. If a ground of rejection stated by the examiner is not addressed in
the appellant’s brief, that ground of rejection will be summarily sustained by
the Board. MPEP § 1205.02. See, e.g., Hyatt v. Dudas, 551 F.3d 1307,
1313-14 (Fed. Cir. 2008) (the Board may treat arguments Appellant(s) failed
to make for a given ground of rejection as waived).
Accordingly, we sustain the rejection of claim 30 made in the Final
Rejection mailed December 22, 2009.

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DECISION
We AFFIRM the decision of the Examiner to reject claims 1-30.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

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